North Face Apparel Trying to Close the Door on “South Butt”

Monday, March 8th, 2010 at 10:19 pm by Ari Taub

We’ve previously discussed an interesting case being brought in Germany for infringement of the name “Cayman” by Crocs. But a case being litigated in federal court in Missouri blows the Croc debacle out of the water. The case was brought by apparel corporation The North Face (“TNF”) against The South Butt” (“TSB”), a college-student-owned company. In its complaint, filed in 2009, TNF brought claims under the Lanham Act for trademark infringement and dilution, arguing that: (1) the similarity between the two companies’ logos and product market create consumer confusion, and (2) TNF’s mark would be degraded from overuse.

A mere glance at TSB’s logo reveals that it creates obvious problems. TNF’s logo features, on the right, an all-white, three-lined half rainbow, with each of the rainbow’s lines meeting the three white words “THE NORTH FACE” against a red background, with the tagline “Never Stop Exploring.” TSB’s logo—seemingly intentionally—is extremely similar. Although the rainbow it features is upside down, has only two lines, is on the left, says “THE SOUTH BUTT,” and has the tagline “Never Stop Relaxing,” the font, size, and layout are all remarkably similar. TSB apparently intended its logo to be a parody, not a copy (as it says on TSB’s website, “I decided to create a way to poke fun at the norm, while making an affordable and quality product.”), though there is a good chance that you will not be seeing a South Butt coat on store shelves in the near future.

Although its nuances are different, the consumer confusion issue was discussed earlier in relation to the Crocs case, and so I focus now on the dilution aspect of this case. Marks are an extremely valuable commodity for companies because they are unique and identifiable solely in connection with a given product. Dilution actions essentially protect the uniqueness of a mark, so that it continues to strongly identify its owner’s product. To explain, let’s assume that “Orange,” a competitor of Apple, began manufacturing millions of laptops with a white illuminated orange on the top of each computer lid. Even if one could successfully argue that there was no “likelihood of consumer confusion” between the two products, since most people can tell the difference between an apple and an orange, Apple’s dilution claim would argue that, due to the extreme similarities between the products and their logos, the strength of Apple’s logo in identifying its product had decreased because of consumers’ increased exposure to the similar “Orange” logos.

Because this case was brought in federal court in Missouri, the court will be bound by 8th Circuit precedent. Instructively, in Anheuser-Busch v. Balducci Publications, the 8th Circuit had to decide whether a comedy magazine’s imitation of the “Michelob Dry” trademark (using the name “Michelob Oily” on a fake advertisement) constituted dilution under federal law. The court held that although the advertisement was clearly intended for satirical purposes, the magazine’s imitation would likely diminish the strength of Michelob’s marks, which had been duly protected under federal law, such that Michelob could prevail.. (For a similar result under the consumer confusion analysis, see Nike v. “Just Did It”, a 7th Circuit case cited approvingly by the 8th Circuit in Anheuser-Busch.)

Ultimately, although the TNF v. TSB case has some humorous aspects, TNF has a legitimate legal interest in protecting the strength of its name and mark. Although people may not be confused as to whether The North Face is the producer of The South Butt, or whether TNF in any way endorsed TSB, the recurring exposure to a logo of such substantial similarity could certainly diminish the strength of TNF’s logo and name. It seems the joke is on the humorous college kid behind TSB in the up-hill legal battle he faces.